The USPTO has commenced a fee-setting process for fee adjustments it expects to implement in January 2021. While many fee changes are modest (~5%), the USPTO proposes significant increases to patent trial fees and two new USPTO fees that will impact all applicants and practitioners.
Petitioners in Inter Partes Review proceedings have looked beyond typical patent and scientific literature to find a “printed publication” that might invalidate a patent. This has given the USPTO Patent Trial and Appeal Board (PTAB) and Federal Circuit an opportunity to explain and further define that category of prior art. GoPro, Inc. v. Contour IP Holding LLC is the latest Federal Circuit decision in this category. There, the court reversed the PTAB and found that a sports video camera sales catalog distributed at an action sports vehicle dealer trade show qualified as a “printed publication” under 35 USC § 102. Continue reading this entry
In Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, the Federal Circuit affirmed decisions of the Patent Trial and Appeal Board (PTAB) that invalidated seven Orange Book-listed patents for Xyrem®. The main issue on appeal was whether FDA meeting materials available on a web page published in a Federal Register Notice qualified as a “printed publication” under 35 USC § 102. The Federal Circuit agreed with the PTAB that they did.
In Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., the Federal Circuit affirmed the district court’s finding that two patents listed in the Orange Book for Aveed® had not been shown to be obvious. Although prior art disclosed clinical studies that used the formulation, the Federal Circuit agreed the disclosures were not sufficient for inherency-based invalidity. This decision provides an illustrative reminder of the difference between prior art challenges based on a prior art publication versus a prior use.
Practitioners with an international patent practice generally view the U.S. written description requirement as more liberal than similar requirements in other jurisdictions, especially the European Patent Office. That said, one of the first lessons I remember learning for the USPTO patent bar is how the written description requirement is applied to numerical values and ranges. Recent decisions from the Federal Circuit and Patent Trial and Appeal Board confirm that the written description requirement limits the ability to claim specific values that cannot be discerned from the original disclosure.